Peggy Focarino Acting Commissioner for Patents
Q. I’m told that having a letter from an attorney explaining why a device is patentable speeds up the patent process. Should I always submit a letter of opinion from a patent attorney with a patent application?
A. A letter of opinion from a patent attorney will not speed up the process. The letter will be reviewed by the examiner, but will not affect the decision as to whether the patent is allowable. It is the examiner’s expertise in the field of technology and prior art that determines if an application is allowable.
However, if you are interested in “speeding up the process,” you should participate in the USPTO’s Accelerated Examination (AE) program. Its goal for the examiner to reach a final decision within 12 months of the filing date of the application.
In fact, one patent application in the program reached final decision in just 18 days and was issued as a patent in 75 days. See Changes to Practice for Petitions in Patent Applications to Make Special and for Accelerated Examination, 71 Fed. Reg. 36323 (June 26, 2006).
To meet this 12-month goal, an applicant who files a petition for accelerated examination will be required to provide additional information and comply with revised procedures throughout the examination process to assist the examiner in expeditiously arriving at a final disposition.
For example, an applicant participating in the AE program must, at the time of filing the application, provide an AE Support Document in support of the petition for accelerated examination.
Among other information, the AE Support Document must include an Information Disclosure Statement (IDS) citing each reference most closely related to the subject matter of each claim, an identification of where each limitation disclosed in the references is found, and a detailed explanation of how each claim is patentable over the reference.
The AE program is designed to enable applicants to obtain quality patents in less time. In exchange for a quick examination, examiners who follow the standard patent procedure will receive more focused and detailed information about the invention and the closest prior art from applicants.
The applicant’s upfront disclosure will help examiners to more quickly make the correct decision on whether a claimed invention is patentable. More information on the AE program is provided on the USPTO’s Web site.
